April 16, 2014

Judge Andrews Claim Construction Order

Judge Richard G. Andrews construed the following claim terms of U.S. Patents Nos. 6,335,031 and 6,316,023 at issue in the Novartis Pharmaceuticals Corp., et al. v. Alvogen Pine Brook, Inc., et al., C.A. No. 13-52-RGA (consol.) (D. Del. Apr. 7, 2014) litigation:

"antioxidant"
"about 0.01 to about 0.5 percent by about 0.01 to about 0.5 percent by
weight"
"diluent or carrier"
"a/the composition"
"an amount of antioxidant effective to stabilize Compound A from degradation"
"stabilizing"

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March 6, 2014

Judge Andrews construes terms of computer-implemented means-plus-function claims, finding all terms indefinite

Judge Richard G. Andrews recently construed eight terms from computer-implemented means-plus-function claims of U.S. Patent No. 5,663,757, titled "Software controlled multi-mode interactive TV systems." Eon Corp. IP Holdings LLC v. Flo TV Inc., et al., C.A. Nos. 10-812-RGA, 13-910-RGA (D. Del. Mar. 4, 2014). In order to construe a means-plus-function limitation, the court must first determine the claimed function, then "'identify the corresponding structure in the written description that performs the function.'" Id. at 6 (quoting Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006)). Where the corresponding structure is a computer, however, the patent must do more than simply disclose a general purpose computer as the structure; the patent must disclose an algorithm for performing the claimed function. Id.

The Federal Circuit recognizes a narrow exception to this general rule: "[I]t is 'not necessary to disclose more structure than the general purpose processor' when the claimed functions 'can be achieved by any general purpose computer without special programming.' Id. at 7 (quoting In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)). "Examples of functions that can be carried out by a general purpose computer without special programming include: processing, receiving, and storing. By contrast, any function that involves more than merely plugging in a general-purpose computer requires special programming." Id. (internal citations and quotations omitted).

In light of this law, Judge Andrews construed the following disputed means-plus-function claim terms, finding all of the terms indefinite for failing to disclose a sufficient corresponding structure:

"Means under control of said replaceable software means for indicating acknowledging of shipment of an order from a remote station"

"Means controlled by replaceable software means operable with said operation control
system for reconfiguring the operating modes by adding or changing features and introducing
new menus"

"Means responsive to said self contained software for establishing a mode of
operation for selection of one of a plurality of authorized television program channels"

"Means establishing a first menu directed to different interactively selectable program
theme subsets available from said authorized television program channels"

"Means for causing selected themes to automatically display a second menu"

"Means controlled by replaceable software means operable with said operation control
system for establishing and controlling a mode of operation that records historical operating data of the local subscriber's data processing station"

"Means controlled by replaceable software means operable with said operation control
system for establishing and controlling fiscal transactions with a further local station"

"Means for establishing an accounting mode of operation for maintaining and reporting fiscal transactions incurred in the operation ofthe local subscriber's data processing station"

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February 10, 2014

Judge Andrews issues decisions in Inventio v. Thyssenkrupp case

In a series of decisions in Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Judge Richard G. Andrews ruled on motions in limine, clarified previous orders, and construed disputed claim terms. The two patents-in-suit relate to elevator installation.

The Court had previously ruled that it lacked subject matter jurisdiction over unasserted claims, and therefore did not address an alleged best mode violation in these claims relating to the claim term “advance selector.” Defendant sought “clarification of whether the Court's holding is simply that the four unasserted claims are not in the case, or whether [defendant] cannot assert a best mode violation relating to the 'advance selector' for the claims that have been asserted." Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Order at 1-2 (D. Del. Feb. 6, 2014) ("Feb. 6 Order") (internal citations and quotation marks omitted). The Court explained that its “holding was simply that the Court did not have subject matter jurisdiction over unasserted claims. However, as the Defendant indicates that there is a disagreement between the parties regarding whether best mode can be raised regarding the presence of an ‘advance selector,’ for the asserted claims, the Court will address this issue.” Id. at 2. This term did not appear in the asserted claims, and the Court had not construed any claim terms to require an advance selector. Therefore, the asserted claims did not require an advance selector and there was no best mode violation. Id. at 2. In a separate Order following the case’s pretrial conference, the Court further clarified that defendant was “precluded from arguing that any aspect of the asserted claims can be invalidated for failure to describe the best mode of an ‘advance selector.’” Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Order at 1 (D. Del. Feb. 7, 2014) ("Feb. 7 Order").

Defendant also sought clarification regarding the Court’s previous damages memorandum. Defendant interpreted the Court’s order to limit plaintiff’s damages to a certain range that reflected a reasonable royalty. Feb. 6 Order at 2. The Court clarified that it “did not limit the Plaintiff to a specific amount of damages, but instead held that the royalty base may not include the services contract revenues.” Id.

Defendant also brought motions in limine to exclude the testimony of plaintiff’s damages expert and to exclude his supplemental report. As to testimony, defendant argued that plaintiff’s expert based his reasonable royalty calculation on allegedly infringing activities that had already been excluded by the Court in a prior order. Id. at 3-4. The Court explained that this “previous order did not exclude any evidence, but instead acted to limit further discovery into the unaccused elevator modernization projects. Thus, it is appropriate for [this expert] to testify regarding these other bids in order to provide context regarding the accused projects and the related financial issues. The Defendant is free to object at trial if [the expert] testifies about issues in which he is not an expert.” Id. at 4. The Court did not consider whether the damages expert’s use of late-produced documents should be a basis for exclusion because “[a] Daubert motion is not the proper vehicle to raise a possible discovery violation.” Id. at 5. On the other hand, the Court excluded plaintiff’s expert’s discussion of the size and revenues of defendant because the Court found that the expert has not used this information to render his conclusion or, alternatively, because this information’s prejudice to defendant outweighed its probative value under FRE 403. Id. at 5. As to the expert’s supplemental report, defendant argued that it added new material. The Court disagreed, finding that it only clarified issues, and denied the motion. Id. at 6.

Plaintiff also moved to preclude the testimony of defendant’s damages expert, arguing that the expert improperly based his analysis on a non-comparable license and that he had not explained why other comparable agreements were not considered. Id. at 6. The license at issue was one between plaintiff and its sister company. Id. at 7. The Court denied plaintiff’s motion, finding the expert “at least minimally connects the license in question to the patents-in-suit and rather than simply extract a royalty rate from the previous license, uses the license as only a single component of his entire analysis.” Id. at 8. The Court also rejected the argument that the expert should have discussed other potentially comparable licenses. Id. at 8-9.

In a separate Order, the Court also granted defendant’s motion in limine to exclude evidence related to certain elevators, because plaintiff had presented no evidence that these elevators embodied the patents-in-suit. Feb. 7 Order at 1. The Court explained that it would "reconsider the matter if the Plaintiff puts on evidence that shows the Avenue of the Americas elevator modernization is an embodiment of the asserted patent claims.” Id. at 2.

Finally, the Court construed the following disputed terms:

“the elevator installation having at least one elevator and at least one elevator control for controlling the elevator in response to call reports generated by hall call transmitters and car call transmitters"

"car call transmitter”

“destination call report(s)”

“modernized” /“modernizing”

“modernizing device”

“a device for temporarily operating an elevator installation during modernization”

“a system for modernizing an elevator installation”

“a method for modernizing an elevator installation"

“elevator installation”

“call report”

“floor terminal”

“at least one of [A] and [B]”

“floor terminal . . . for at least one of the input of destination call reports and for recognition of identification codes of users;”

“floor terminal. .. operative for at least one of input of destination call reports and recognition of identification codes of passengers”

“computing unit ... for at least one of evaluating the destination call reports and association of destination floors with recognized ones of the identification codes”

“identification code”

“recognition of identification codes of passengers”

“computing unit”

“destination signal”

“interrupting at least one existing electrical floor call transmitter line between at least one floor call transmitter and the elevator control”

“interrupting at least one existing car call transmitter line between at least one car call transmitter and the elevator control”

“the elevator control being disconnected from the hall call transmitters and the car call transmitters of the elevator installation”

“existing electrical floor call transmitter line”

“existing car call transmitter line”

“floor call transmitter line input”

“car call transmitter line input”

“hall call transmitter”

“performing said steps a. through c. [of claim 1] for each elevator car and associated elevator control of an elevator installation in succession whereby the elevator installation is modernized in a modular manner”

“read” or “reading”

“temporarily”

UPDATED: Judge Andrews issued amended claim constructions on February 20, 2014

Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA (D. Del. Feb. 4, 2014).

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February 7, 2014

Judge Andrews claim construction order

Judge Richard G. Andrews construed the following claim terms from U.S. Patent No. 8,094,010, the patent at issue in M2M Solutions LLC v. Sierra Wireless Am., Inc., et al., C.A. No.s 12-030-RGA to 12034-RGA (D. Del. Jan. 30, 2014):

"permitted caller"
"coded number"
"programmable interface"
"processing module"
"monitoring device"
"wireless communications circuit for communicating through an antenna"
"monitored technical device"

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January 30, 2014

Judge Andrews grants-in-part motion for reconsideration of the Court's prior claim construction opinion

Judge Richard G. Andrews recently considered plaintiff's Motion for Partial Clarification and Reconsideration of the Court's Memorandum Opinion on Claim Construction. M2M Solutions LLC v. Sierra Wireless Am., Inc., et al., C.A. Nos. 12-30-RGA to 12-34-RGA (D. Del. Jan. 24, 2014). Judge Andrews largely denied the motion but did agree to make one modification to the Court's earlier construction of the term of"wireless communications circuit for communicating through an antenna." The Court previously construed the term to mean "a complete wireless circuit that transmits and receives data and includes an antenna." (Nov. 12 opinion at 15). Judge Andrews reconsidered that construction:

The claim language itself requires the circuit to communicate "through an antenna." The plain meaning of "through an antenna" is "through an antenna," and this should not be read out of the claim. The construction is revised to read: "a complete wireless circuit that transmits and receives data through an antenna."

Id. at 5.

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January 21, 2014

Judge Andrews issues modified constructions of various claim terms after asking parties to reargue constructions

Judge Richard G. Andrews recently issued the Court's modified claim constructions after ordering the parties to reargue claim terms, "as a result of the Court becoming more familiar with the technology at issue in this case." Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-RGA (D. Del. Jan. 14, 2014). The Court's original opinion construing the claim terms of the patents-at-issue, U.S. Patent Nos. 6,935,465 and 6,892,861, was issued by Judge Robreno, sitting by designation.

Judge Andrews construed the following terms:

"elevator control"

"at least one of [A] and [B]"

"interrupting at least one existing car call transmitter line between at least one car call
transmitter and the elevator control"

"interrupting at least one existing electrical floor call transmitter line between at least
one floor call transmitter and the elevator control"

"the elevator control being disconnected from the hall call transmitters and the car call
transmitters of the elevator installation"

"modernized" and "modernizing"

"elevator installation"

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January 17, 2014

Judge Andrews Construes Disputed Term of Automotive Technology Patent

Vehicle Interface Technologies has asserted a patent against several automotive manufacturers that claims a user interface for various systems of an automobile including both information about the vehicle and information for other “optional subsystems” of the vehicle. The only claim term disputed by the parties for Markman purposes was “wherein the fixed area and the selectable area each comprise a unique and static portion of the display.” Vehicle Interface Techs., LLC v. Ferrari N. Am., et al., C.A. Nos. 12-1283-RGA, Memo. Op. at 5 (D. Del. Jan. 13, 2014). Judge Andrews noted that the parties were essentially in agreement as to most of the term and that he agreed that portion was correct.

The only disputed part of the term was, therefore, “whether to include the additional limitation that a selectable area cannot display vehicle information, as the Defendants propose.” This dispute arose from an argument made in prosecution to overcome a prior art reference that disclosed vehicle information and selectable information in the same display area. Id. at 5-6. Judge Andrews found that the prosecution history “makes it clear that it is the fixed and selectable areas that must be separate, and not necessarily the content in those respective areas.” Id. at 6-7. Furthermore, the claims and the specification conflicted with the Defendants’ proposed limitation. Id. at 7-8. Accordingly, Judge Andrews found that it would be incorrect to include the Defendants’ proposed limitation and adopted the construction “Wherein the fixed area and the selectable area have non-overlapping and non-moving boundaries and the fixed area does not display any of the plurality of pages.”

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January 9, 2014

Judge Robinson grants-in-part motions for summary judgment of invalidity and non-infringement, construes claims

In Intellectual Ventures I, LLC, et al. v. Motorola Mobility, LLC, C.A. No. 11-908-SLR (D. Del. Jan. 2, 2014), defendant had moved for summary judgment of invalidity and non-infringement of six patents-in-suit. Judge Sue L. Robinson granted summary judgment of non-infringement as to the one of the patents-in-suit, finding that the accused product performed steps expressly prohibited by this patent. Id. at 22-24. The Court also granted summary judgment of invalidity as to a different patent because it determined that the combination of two prior art references rendered this patent obvious. Id. at 38-40. Specifically, the Court concluded that one reference’s “warning of increased costs” as to the a stated object of the patent’s invention did not teach away from combining the two references. Id. at 40.

The Court denied the remaining motions because genuine issues of material fact existed. In denying defendant’s motions, the Court, among other issues, concluded that: plaintiff was not precluded from applying the doctrine of equivalents as to a certain patent due to amendment of claims during prosecution because “the claim of equivalence are for aspects of the invention that have only a peripheral relation to the reason the amendment was submitted," id. at 35; defendant’s own patent was not entitled to the priority date of an abandoned “grandparent application” (and therefore did not qualify as prior art) because there were key differences between the disclosures in defendant’s patent and those of the grandparent application, id. at 46-49; one patent-in-suit was not entitled to an earlier priority date based on PowerPoint presentation by its inventor because metadata showing its creation date was insufficient to show reduction to practice, id. at 61-63.

The Court also construed the following terms:

“at the second device, [of] the single combined file irrespective of user action at the second device,” id. at 17-18;

"absent non-transient intermediate storage of the selected file on an intervening communications device of the communications network,” id.;

“Receive the selected file and associated text file absent initiation of retrieval of the selected file from the intervening communications device by the second device and absent user action at the second device," id. at 18-19;

“delivery report,” id. at 19;

“Authenticating device of the communications network;” id. at 19-20;

“A polarization converter ... to polarize the light from the illumination uniformizing means into a polarized light,” id. at 30-31;

“A light source, comprising an ‘array of a plurality of light emitting devices,’” id. at 31-32;

“Presenting a directory of software [updates] available for installation on the user station,” id. at 41-42;

“Presenting a directory of software [updates] available for installation on the user station and not already installed on the user station,” id. at 43;

“Content,” id. at 50-51;

“Effect presentation ... with a user interface that is customized to the respective publishers,” id. at 51-52;

“Allocating is responsive to at least one field in the packet header,” id. at 57-59;

“Central processor,” id. at 65-66;

“Detachable headset,” id. at 66-67.

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December 6, 2013

Chief Judge Sleet Construes Terms of “Jousting Toy” Tops Patent

Chief Judge Sleet recently issued his constructions of disputed claim terms in a patent related to “jousting toy” spinning tops. The patent is being asserted against Lego.

Judge Sleet construed the following terms:
- “stable footing on said playing surface to maintain said body section in an upright position without the use of centrifugal force”
- “[first playing component configured to] kinetically engage and form a scoring connection with a second playing component”
- “hooked arm connecting to said wire frame hoop”
- “means for rotating said body section”
- “means for carrying said body section above a playing surface”
- “means for providing a stable footing on said playing surface to maintain said body section in an upright position without the use of centrifugal force”
- “means for kinetically engaging said first playing component with a second jousting element to form a scoring connection”

Battle Toys, LLC v. Lego Systems, Inc., C.A. No. 12-928-GMS, Order at 1-10 (D. Del. Dec. 2, 2013).

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November 22, 2013

Judge Burke Recommends Claim Constructions in Exjade ANDA Case

Magistrate Judge Burke has issued a report and recommendation regarding claim construction in a Hatch-Waxman case involving the drug deferasirox, known by the brand name Exjade. The case involves two patents, one of which claims the chemical compound itself and was not the subject of claim construction disputes, and one of which claims methods of using certain compounds and was the subject of claim construction disputes. Novartis Pharms. Corp., et al. v. Actavis, Inc., et al., C.A. No. 12-366-RGA-CJB, Report and Recommendation at 1-2 (D. Del. Nov. 21, 2013). The terms that Judge Burke construed were:
- “diseases”
- “iron overload”
- “treating”
Id. at 6-23.

Interestingly, the parties also disputed whether certain claims were independent or dependent claims. The defendants argued that claims 8 and 16 expressly referred to claims 3 and 9, respectively, and were thus clearly dependent. The defendants found further support for the dependency of these claims in the prosecution history, including statements during prosecution that “identical claim language to that at issue was language of dependency.” Id. at 23-28. Plaintiffs took the position that claims 8 and 16 were independent, but had “no real answer for how to square [the] prosecution history with their . . . position that the claims are independent.” Id. at 27. Accordingly, Judge Burke also recommended that claims 8 and 16 be construed as dependent claims. Id. at 28.

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